DECISION

 

State Farm Mutual Automobile Insurance Company v. Domain Privacy / Domain Name Privacy Inc

Claim Number: FA2501002134563

 

PARTIES

Complainant is State Farm Mutual Automobile Insurance Company ("Complainant"), United States, represented by Sherri Dunbar of State Farm Mutual Automobile Insurance Company, United States. Respondent is Domain Privacy / Domain Name Privacy Inc ("Respondent"), Cyprus.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <state-farm.online>, registered with CommuniGal Communication Ltd.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 10, 2025; Forum received payment on January 10, 2025.

 

On January 14, 2025, CommuniGal Communication Ltd. confirmed by email to Forum that the <state-farm.online> domain name is registered with CommuniGal Communication Ltd. and that Respondent is the current registrant of the name. CommuniGal Communication Ltd. has verified that Respondent is bound by the CommuniGal Communication Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 15, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2025 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@state-farm.online. Also on January 15, 2025, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a nationally known company engaged in the insurance and financial services industries. Complainant began using the STATE FARM mark in 1930, and owns longstanding trademark registrations for STATE FARM and related marks in the United States and other jurisdictions. Complainant asserts that its mark is famous, citing several prior decisions under the Policy that have so found. See, e.g., State Farm Mutual Automobile Insurance Co. v. Tulip Trading Co., FA 1701155 (Forum Dec. 12, 2016); State Farm Mutual Automobile Insurance Co. v. wwWHYyy.com c/o Robert Mitton, FA 1063456 (Forum Sept. 25, 2007).

 

The disputed domain name <state-farm.online> was registered in August 2024. The name is registered to Respondent. The domain name initially resolved to a parked web page composed of pay-per-click links; it now redirects to a page containing a "not a robot" validation prompt. Complainant states that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <state-farm.online> is identical or confusingly similar to its STATE FARM mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; UDRP Perspectives on Recent Jurisprudence, §§ 0.2, 0.8 (updated Jan. 15, 2025), available at https://udrpperspectives.org/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <state-farm.online> corresponds to Complainant's registered STATE FARM trademark, substituting a hyphen for the space and adding the ".online" top-level domain. Such alterations are normally disregarded for purposes of paragraph 1(a) of the Policy. See, e.g., State Farm Mutual Automobile Insurance Co. v. Leonid Efimov, FA 1846301 (Forum July 17, 2019) (finding <state-farm.website> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. Hoang Le, FA 1701154 (Forum Dec. 8, 2016) (finding <statefarm.online> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. Ilya Kushnirsky, FA 98822 (Forum Sept. 16, 2001) (finding <state-farm.ws> confusingly similar to STATE FARM); State Farm Mutual Automobile Insurance Co. v. I & B, FA 94719 (Forum June 8, 2000) (finding <state-farm.com> identical or confusingly similar to STATE FARM). The Panel finds the disputed domain name to be identical or confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization. Respondent does not appear to have engaged in any substantial active use of the domain name, suggesting that Respondent lacks rights or legitimate interests. See, e.g., State Farm Mutual Automobile Insurance Co. v. Anjali Khanna, FA 2039139 (Forum May 4, 2023) (finding lack of rights or interests where domain name resolved to web server test page); State Farm Mutual Automobile Insurance Co. v. Hoang Le, supra (finding lack of rights or interests where domain name resolved to "coming soon" page).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

The disputed domain name corresponds to Complainant's famous mark. It is registered in the name of what the Panel infers to be a privacy registration service. Respondent does not appear to have made any substantial active use of the domain name, and has not come forward to offer any explanation of the intended use or reasons for selecting the name. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant and its mark and is maintaining the domain name for that purpose. See, e.g., State Farm Mutual Automobile Insurance Co. v. Anjali Khanna, supra (finding bad faith registration and use in similar circumstances); State Farm Mutual Automobile Insurance Co. v. ReachLocal Hostmaster, FA 1762154 (Forum Jan. 8, 2018) (same); State Farm Mutual Automobile Insurance Co. v. Hoang Le, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <state-farm.online> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: February 5, 2025